T 1623/14 - Not deciding on inventive step attack

Key points

• The Board finds a substantial procedural violation, because the OD's decision is insufficiently reasoned, because the OD's decision does  not address one of the opponent's inventive step attacks.
• " The appellant [opponent] in the first instance proceedings explicitly and repeatedly argued that the subject-matter of claim 6 of the patent was not inventive in view of document D1 in combination with the common general knowledge of the skilled person []. However, the Opposition Division in its reasons for the decision, [] when discussing inventive step of the subject-matter of claim 6 made reference only to documents D5 and D4 as prior art documents and neither explicitly nor implicitly took into account the alleged common general knowledge of the skilled person. The Opposition Division therefore failed to address the main argument submitted by the [opponent]; this constitutes inadequate reasoning which contravenes Article 113 EPC 1973 and results in a substantial procedural violation." 

EPO T 1623/14 - link

4. Reimbursement of appeal fee (Rule 67, first sentence, EPC 1973)

4.1 According to Rule 67, first sentence, EPC 1973 (regarding the applicability of the provisions of the EPC 1973 instead of Rule 103(1)(a) of the EPC in the revised text for European patent applications pending at the time of its entry into force, see J 10/07, OJ EPO 2008, 567, 585, 586, point 7 of the Reasons), "the reimbursement of appeal fees shall be ordered ... where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation".

T 1972/13 - Null and void decision and A116

Key points:

• Article 116
  In this examination appeal, the Examining Division issued summons for oral proceedings of own motion, not on request of the applicant. The applicant considered the summons for oral proceedings to be premature. The applicant sent a letter to the Examining Division requesting that "cancellation of the oral proceedings and the continuation of the examination in writing, possibly supplemented by a telephone interview with the primary examiner, if the Examination Division deems it expedient". Auxiliary it was requested "that the oral proceedings are conducted by video-conference, using IP technology; and that the date of the oral proceedings is changed" (the letter was signed by an EPA). Oral proceedings were cancelled, and as next action the application was refused by the Examining Division.
• The Board finds this to be a substantial  procedural violation. " The board further considers that having read the applicant's letter, the examining division at the very least should have been in doubt as to the status of the applicant's requests regarding the continuation in writing and the oral proceedings and should have requested clarification from the applicant in order to avoid committing a substantial procedural violation []. The board notes finally that, in view of the new situation brought about by the [letter], it is not relevant that oral proceedings were initially arranged ex officio and not in response to a request by the applicant." 
• " The board concludes that the examining division infringed the applicant's right to oral proceedings, thereby infringing the applicant's right to be heard enshrined in Article 113(1) EPC."  As a comment, the right to oral proceedings is laid down in Article 116 EPC, not in Article 113(1) EPC. The right to be heard and the right to oral proceedings are distinct and separate rights.
• Null and void decision
  Some time after the decision refusing the application, the Examining Division issued a second separate decision refusing the applicant's request pursuant to Rule 64(2) EPC for reimbursement of an additional search fee. The Board considers this decision to be null and void. " The board considers that the first decision refusing the application pursuant to Article 97(2) EPC terminated the proceedings before the examining division." The case is remitted for the violation of the right to oral proceedings. " The second decision on refund of the additional search fee being null and void, the board considers it appropriate that the matter be reconsidered by the examining division." As a comment, I wonder how the Board would decide the matter if the decision to refuse the application was sound and upheld. 

EPO T 1972/13 - link

Reasons for the Decision

1. The right to be heard (Article 113(1) EPC)

1.1 In the statement of grounds of appeal, the appellant submits two main arguments as to why its right to be heard has been infringed:

(i) The response "R3" contained a "detailed" reasoning and "actually new arguments" to which "no answer has been provided by the Examining Division until the refusal notification in item 27.1. Thus the applicant had no opportunity to present his comments on this new ground stated in item 27.1 in the notification under appeal".
(ii) "Moreover, in reply R1 [sic] to the first communication C2 of the Examining Division, the Applicant has filed at least one admissible request and provided a reasoned statement in support to the patentability of its subject-matter, that following the Applicant's reply, the Examining Division has adopted a different approach to assess the patentability of the invention: while in the first communication of April 5, 2011 document D1 was considered as the primary reference and the subject-matter of claim 1 was held to lack an inventive step over document D1 alone, in the Preliminary Opinion accompanying the Summon [sic] to attend oral proceedings C3, D2 is considered as the closest prior art, and D1 is used as a secondary reference. Thus the applicant demonstrated his good will concerning the progress of the written proceedings.
Thus, the continuation of the examination in writing would have consisted in the present case in giving the possibility for the applicant to respond to a notification pursuant 94(3) EPC or to oral proceedings [board's underlining]".

1.2 It is not necessary to consider argument (i), because the board agrees with the appellant that the examining division should either have issued a communication or have held oral proceedings (argument (ii)), for the reasons set out below.

T 0420/14 - As brief and concentrated as possible

Key points

• In connection of admissibility of the auxiliary requests in this opposition appeal, the Board recalls that "[it] is the established case law of the boards of appeal that the appeal procedure is designed to ensure that the proceedings are as brief and concentrated as possible" .
• The auxiliary requests were submitted before the opposition division, but the OD did not decide on them (neither for admissibility nor for allowability) as the opposition was rejected (patent maintained as granted). Hence, admittance of these requests needs to be decided on by the Board. 
• "If auxiliary requests are submitted, reasons usually have to be given to explain how they overcome those objections (at least if this was not obvious from the amendments made)." Merely indication basis under Article 123(2) EPC is not sufficient, and also indicating the distinguishing features is not sufficient. 
• "[The] merits of these auxiliary requests with respect to inventive step could only be considered in a meaningful manner if the reasons presented in support of those auxiliary requests had been stated fully in order for the Board firstly to allow to understand the chain of logic leading the [patentee] to the conclusion that the amendments submitted overcame the objection raised by the [opponent], and secondly to study and evaluate whether the argumentation presented was persuasive. This in the present case did not only require arguments concerning whether those amendments represented further distinguishing features over the closest prior art, could lead to a different formulation of the problem successfully solved and to a different assessment of the obviousness of the claimed solution, but also a clear indication of the pertinent passages of the relevant prior art, i.e. of the closest prior art and the other documents relied on by the respondent in combination thereof, in order to allow for the Board and the other party to take position with respect to those auxiliary requests. " 

EPO T 0420/14 -  link

9.1 It is the established case law of the boards of appeal that the appeal procedure is designed to ensure that the proceedings are as brief and concentrated as possible and ready for decision at the conclusion of oral proceedings, if scheduled. As indicated in the Case Law (supra, IV.E.4.2.4), the RPBA taken as a whole make it clear that appeal proceedings are primarily written in nature, an important aim of Article 12 and Article 13 RPBA being that the parties' submissions are concentrated at as early a stage as possible so that the case is as complete as possible when it comes to examining it, oral proceedings being in principle appointed at a point in time when the written submissions of all parties are complete (see decision G 4/95, reasons Nr 4).

T 1293/13 - Trapped by parameter

Key point

• Claim 1 as granted is directed to "A garment (400), comprising: a first garment portion [having] an air permeability of less than 168m3/min per m2 [] measured according to ASTM D737-96 using a Frazier Low Pressure Air Permeability Machine 750".
• The reference to a "Frazier Low Pressure Air Permeability Machine 750" kills the patent - the number is said to refer to a series number, i.e. one device, which no longer exists. The claim is considered insufficiently disclosed with the feature. The Auxiliary Request(s) wherein the feature is omitted, is held to violate Article 123(3) EPC.
• " Albeit arising from an objection of the examining division, it was the applicant's [] decision to include such a precisely worded definition of the testing machine into claims 1 and 17. Although the burden of proof lies with the opponent [] in showing that a ground of opposition under Article 100(b) EPC may prejudice maintenance of the patent, it has fulfilled this burden by showing that the parameter values from the specific machine cannot be provided [. It] is therefore for the appellant to show the contrary, namely (1) that some, and which particular ones of the Frazier machines had the same properties as the '750'-machine to measure the permeability according to the claim, and (2) that this was something that the skilled person would have sufficiently been aware of so that the skilled person would have directly and unambiguously deduced it from the application - which the Board finds it has not done." 
• " The [patentee's] further argument that the burden of proof lies with the opponent/respondent's side to provide evidence that the claimed values for the air permeability from the '750' machine would indeed deviate from data for air permeability obtained by any commercially available Frazier Low Pressure Air Permeability Machine is not accepted. This would seem to be an impossible task. Although it may have been possible for the [patentee] itself to provide data of air permeability originating from this specific machine (possibly from an earlier date when the machine existed) with other machines [] the same cannot be said of the respondent. " 

EPO T 1293/13 -  link

VII. Claim 1 as granted (main request) reads as follows:

"A garment (400), comprising:

a first garment portion formed of a fabric material, wherein the first garment portion has an air permeability of less than 168m**(3)/min per m**(2) (550 ft**(3)/min per ft**(2)) measured according to ASTM D737-96 using a Frazier Low Pressure Air Permeability Machine 750;

T 1520/12 - Closest prior art and purpose

Key points

• In this examination appeal, the Board acknowledges inventive step for a "system [for the supervision of an exterior environment of a motor vehicle] differs from the system of D1 in that it is installed in an exterior rear view mirror and in that it is adapted to detect the presence of objects susceptible to collide with said vehicle, namely [in the dead angle zone], and to warn the driver accordingly." 
• The claim in found inventive in particular because " The mere finding that the skilled person would have adapted the system of D1 according to the geometry of the problem to be solved by taking into account the location of the dead angle relative to the vehicle and its trajectory may be correct, but is not conclusive. Such an approach namely relies on the assumption that the skilled person would have indeed considered using the system of D1 for the claimed purpose. Whether such an assumption is justified under the circumstances is, however, doubtful." 
• Compare T 1742/12

EPO T 1520/12 - link

For these reasons, document D1 is considered to illustrate the closest prior art.

3.2 The claimed system [for the supervision of an exterior environment of a motor vehicle] differs from the system of D1 in that it is installed in an exterior rear view mirror and in that it is adapted to detect the presence of objects susceptible to collide with said vehicle, namely within a determined area behind the vehicle covering at least one dead angle, and to warn the driver accordingly.

The invention permits to warn the driver of risks of collision because of objects present in the area corresponding to the dead angle of a rear view mirror, taking due account of the fact that said dead angle may vary according to the trajectory followed by the vehicle (cf. page 4, lines 7-14).

T 2016/16 - Re-establishment

Key points

• The Board refuses the request for re-establishment of rights for a missed time limit for filing the statement of grounds. The time limit was missed because it was not entered into the docketing system by an assistent, and the omission was not noticed by the attorney. 
• To summarize the Board's reasoning in reversed order: "The omission from the docketing system of the time limit for filing the statement of grounds can therefore not be said to equate to an isolated mistake in a normally satisfactory monitoring system [for monitoring time limits]". This was because "[the] appellants have not discharged their burden to prove the existence of a normally satisfactory monitoring system." This was the case because "even with such a system of double checking in place [by the attorney], the representative is not discharged from his or her duty to properly instruct and supervise the assistant []. In the case at hand, the appellants have not shown that the assistant was properly instructed or that she was properly supervised".
•  "In particular, there is no evidence on file that would suggest that the assistant had been instructed to enter not only the two-month time limit for filing the notice of appeal in the docketing system but also the four-month time limit for filing the statement of grounds of appeal. In this respect, the board also notes that the appellants' contention that the assistant normally performed her duties satisfactorily is not supported by corroborating evidence." 

EPO T 2016/16 -  link

Summary of Facts and Submissions

I. The appellants (applicants) lodged an appeal against the decision of the examining division to refuse application No. 10 817 590.2. The impugned decision was posted on 16 March 2016.

II. The appellants filed a notice of appeal on 20 April 2016 and paid the prescribed fee on the same day.

III. The statement of grounds of appeal was filed on 22 August 2016. On the same day, a request for re-establishment of rights in respect of the time limit for filing the statement of grounds of appeal was filed and the prescribed fee was paid. With the statement of grounds of appeal, the appellants filed a main request and an auxiliary request.

EPO Debit orders - New ADA OJ 2017 Suppl. 5

Key points

• As of 1 December 2017, debit orders can no longer be given by fax, on paper, or in PDF attachments. 
• Debit orders should be given using Online Fee Payment, the PCT fee calculation and payment feature in e.g. Online Filing (if I understand the second bullet below correctly), or the forms that are filled in in EPO Online Filing or EPO CMS. 
• Only in case of patent application filed on paper with a national authority under Article 75(1)(b) EPC, can a special paper form debit order be used. Some national authorities allow filing EP applications with them using EPO Online Filing Software, so then the debit order can be included in proper format. Alternatively, I assume that bank transfer to EPO mentioning the application number can be used for payment of the filing fee and search fee. 

EPO  link

5.1.2 The debit order must be filed in an electronically processable format (XML) via one of the following:

• EPO Online Filing or the EPO Case Management System (CMS), using EPO Forms 1001E, 1200E, 2300E or 1038E;
• the EPO Online Filing software or PCT-SAFE, CMS and ePCT using the PCT fee calculation and payment feature;
• Online Fee Payment in Online services.

5.1.3 Debit orders submitted in any other way, e.g. on paper, by fax, via the web-form filing service or using a different format such as a PDF attachment, are invalid and thus will not be carried out. The EPO will inform the party to the proceedings[ 8 ]accordingly, as a courtesy service. The legal consequence of filing an invalid debit order is laid down in point 5.4.2.

T 0433/12 - Crossing the box is not sufficient

Key points

• In this case, the question is whether "added subject-matter" is a fresh ground raised in appeal. "it remains to be examined whether crossing the relevant box in Form 2300 [Notice of opposition]  [means] that the ground was present in those proceedings." 
• The Board quotes G 1/95 that the term " fresh ground"  is intended to refer to a ground for opposition which was neither raised and substantiated in the notice of opposition, nor introduced into the proceedings by the Opposition Division. Hence, because the ground was not substantiated (only the box was crossed), it is a fresh ground, and is not admitted.
• As a comment, I wonder what the purpose (or legal effect) of the box in Form 2300 is. EPO Forms should, in my opinion, not include boxes without legal effect (apart from things like reference numbers). 

EPO T 0433/12 - link

4. Added subject-matter

In its written submissions in the appeal proceedings the appellant (opponent) argued that the last two features of the claim added subject-matter, so the ground for opposition under Article 100(c) EPC prejudiced the maintenance of the patent.

In its notice of opposition, on Form 2300, the appellant (opponent) had crossed the box indicating that said ground was amongst those regarded as prejudicial to maintenance of the patent. However, no arguments in support of this ground were presented in the notice of opposition. Subsequently the Opposition Division refused to consider this ground for opposition when the opponent eventually substantiated it in the first-instance oral proceedings (impugned decision, Reasons, point 2.1).

The last two features of the claim were contained in claim 1 of the patent as granted, so they do not constitute amendments which, pursuant to G9/91, Reasons, point 19 (OJ 1993, 408), the Board has the power to examine ex officio for compliance with the requirements of the EPC.

Concerning patents as granted, in G10/91 (OJ 1993, 420, Reasons, point 3) the Enlarged Board of Appeal decided that "Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee."

T 0633/14 - Dictionary definition and right to be heard

Key points

• The patent proprietor (appellant) complained about a substantial procedural violation because the OD referred in its written decision to the Merriam-Webster dictionary  of the word "thus" , that dictionary entry had not been discussed during the oral proceedings.
• " In order to come to a decision about extension of subject-matter, the Opposition Division had to interpret the wording of the description and the meaning of the word "thus". After the debate in the oral proceedings, they were entitled to interpret the specification and to argue - without any dictionary support - that the word "thus" logically connected both sentences. Hence, the dictionary entry was only cited in the written decision in support of a conclusion already reached during oral proceedings []. Therefore, the reference to the Merriam-Webster dictionary in the decision, having only a supporting but not a decisive function, neither leads to a violation of the right to be heard, nor to a substantial procedural violation. " 
• 
  

EPO T 0633/14 -  link

2. Request for reimbursement of the appeal fee

The main objection resides in the fact that in interpreting a particular passage comprising the word "thus", the Opposition Division referred [in its written decision] to a Merriam-Webster dictionary entry which had not been discussed during the oral proceedings.

The issue of whether the second sentence (which discloses the parameter ranges) was logically or causally linked with the first sentence (which refers to the "above described cell pattern") was discussed during the oral proceedings (point 2.1 of the minutes), including page 14, lines 7-9, i.e. the particular passages with the word "thus"; this much is undisputed.

Furthermore, in order to come to a decision about extension of subject-matter, the Opposition Division had to interpret the wording of the description and the meaning of the word "thus". After the debate in the oral proceedings, they were entitled to interpret the specification and to argue - without any dictionary support - that the word "thus" logically connected both sentences. Hence, the dictionary entry was only cited in the written decision in support of a conclusion already reached during oral proceedings - after a detailed discussion with the parties regarding the contextual interpretation of the relevant passage.

T 0359/12 - Need to react to Examiner

Key points

• In this examination appeal, the Board does not admit an auxiliary request, because (i) it was divergent from the main request and (ii) the amendments made could have been produced in first instance proceedings. The Board notes that the clarity issues with the AR had been discussed during oral proceedings before the Examining Division. " Hence, the [applicant] had already been confronted with this objection during first instance proceedings. In view of this, the [applicant] could have submitted amended claims corresponding to the pending auxiliary request during oral proceedings before the examining division at the latest. [The applicant] however, waived his right to comment or to file further requests to overcome said objection."
• As a comment, it can be quite though to react immediately to a (new) clarity objection raised during oral proceedings, and come up on the spot with appropriate claim wording having the approval of the client. Making good for that could be seen as a legitimate purpose of the appeal procedure. 

EPO  T 0359/12 -   link

4.6 A further aspect to be considered is that according to Art. 12(4) RPBA a board has the power to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings.

In the present case, the examining division already raised clarity objections under Art. 84 EPC 1973 against the formulation "having a trapezoidal or substantially rectangular shape" during oral proceedings on 11 October 2011 (cf. minutes, page 5, second paragraph) and discussed them in more detail in the decision under appeal (cf. reasons, section 2.2.2). Hence, the appellant had already been confronted with this objection during first instance proceedings. In view of this, the appellant could have submitted amended claims corresponding to the pending auxiliary request during oral proceedings before the examining division at the latest. As it results from the minutes (cf. page 5, third paragraph), the appellant, however, waived his right to comment or to file further requests to overcome said objection.

4.7 Since the subject-matter of the pending auxiliary request diverges from the subject-matter of the pending main request submitted during oral proceedings and, moreover, the amendments made could have been produced in first instance proceedings, the pending auxiliary request was not admitted into the appeal proceedings under Art. 12(4) and 13(1) RPBA.

5. Since the pending main request and auxiliary request were not admitted into the proceedings and all previous requests had been withdrawn, there are no requests on file, so that the appeal has to be dismissed.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

T 2410/11 - Translation error

Key points

• In this examination appeal, the Board allows a correction in the description. The PCT application had originally been filed in Chinese, and the translation error in the description could be corrected. Article 14(2) EPC, applies " equally" to PCT applications according to established case law.

EPO T 2410/11 - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Correction of translation error

2. The appellant submitted amended page 4 as a request for correction of the translation of the Euro-PCT application.

2.1 The international patent application corresponding to the present application was filed in the Chinese language and designated the European Patent Office for several contracting states. It is therefore equivalent to a regular European application (Euro-PCT application) pursuant to Article 153(2) and (3) EPC.

T 2150/15 - Minutes OP ExDiv

Key points:

• In this examination appeal, the Board follows established case law that it is not competent to decide on a request for correction of the minutes of the oral proceedings held before the Examining Division.

EPO T 2150/15 -  link

6. Minutes of Oral Proceedings before the examining division

As regards the appellant's request dated 15 October 2015 for a correction of the minutes of the oral proceedings before the examining division, the board is not competent to decide on such a request. The request must be considered and decided on by the examining division who sat at the oral hearing.

T 231/99 (Reasons 1.5), T 508/08 (Reasons 2) and T 1005/08 (Reasons 1.2) have stated that the boards neither have the competence to decide on the accuracy of the first instance minutes nor can they compel the division to make corrections.

The board also draws attention to the communication of the examining division dated 13 November 2015, which refers to the appellant's request, and under cover of which an amended version of the minutes of the oral proceedings should have been sent. However, apparently by mistake, the same text (i.e. the version of 15 June 2015) was sent again (apart from a different document title on page 1 of the said minutes). It rests with the examining division, to send the corrected version of the minutes again, if still relevant.

T 2227/12 - Prima facie allowability restricted

Key points

• A new request was filed during the oral proceedings. The opponent requested adjournment of the oral proceedings to prepare for a discussion of prima facie allowability with respect to novelty and inventive step. The Board does not agree, and observes that if so far in the procedure only added subject matter and clarity have been discussed, the criterium of prima facie allowability can be restricted to those requirements. 

EPO Headnote (translation)

If in the impugned decision and in the appeal procedure only objections under Articles 123(2) and 84 EPC are dealt with, the Board can limit the criterium of prima facie allowability for admitting requests filed during oral proceeding to these issues, such that the examination of prima facie allowablity in view of Article 52(1), 54 and 56 EPC is omitted.


EPO Headnote
Wenn in der angefochtenen Entscheidung und im Beschwerdeverfahren lediglich Einwände unter den Artikeln 123 (2) und 84 EPÜ behandelt wurden, kann die Beschwerdekammer das Kriterium der prima facie Gewährbarkeit für die Zulassung eines in der mündlichen Verhandlung eingereichten Antrags auf diese Einwände beschränken, so dass die Prüfung einer prima facie Gewährbarkeit im Hinblick auf die Artikel 52 (1), 54 und 56 EPÜ unterbleibt.

EPO T 2227/12 -  link

3. Hilfsantrag 1a

Um diesen ertsmals in der mündlichen Verhandlung erörterten Einwand auszuräumen, hat die Beschwerdeführerin in der mündlichen Verhandlung Hilfsantrag 1a gestellt. Der Anspruch des Hilfsantrags 1a unterscheidet sich von dem Anspruch des Hauptantrags dadurch, dass das Merkmal "durch Setzen einer von den Verbraucher (10) zu der zugehörigen Stromversorgungseinheit (2) geführten Statusleitung (11)" geändert wurde in: "durch Setzen einer von den Verbraucher (10) zu der Schaltlogik der zugehörigen Stromversorgungseinheit (2) geführten Status1eitung (11)".

3.1 Zulässigkeit des Hilfsantrags 1a

3.1.1 Die Kammer hat den erstmals in der mündlichen Verhandlung gestellten Hilfsantrag 1a in das Verfahren zugelassen.

Entgegen der Ansicht der Beschwerdegegnerin hatte die Beschwerdeführerin keine Veranlassung, die in diesem Hilfsantrag vorgenommene Änderung bereits zu einem früheren Zeitpunkt vorzunehmen, da der Aspekt, der die Änderung veranlasst hat, erstmals in der mündlichen Verhandlung thematisiert worden ist.

T 1546/16 - Right to be heard in examination

Key points

• The Board finds a substantial procedural violation of the Examining Division, because the reasoning for the Article 123(2) EPC objection was given for the first time in the decision.
• " The examining division contented itself with pointing out the concrete amendments that constituted added subject-matter and citing the pertinent provisions of the [EPC] that were thereby infringed. The appellant thus was not clearly informed in the communication why the examining division was of the opinion that the objected amendments contained subject-matter which extended beyond the content of the application as filed. The statement was put forward in an abstract way only[]." 

EPO T 1546/16 -  link

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. Substantial procedural violation

2.1 According to the principle of the right to be heard pursuant to Article 113(1) EPC, the decision of the examining division must be based on grounds on which the applicant has had an opportunity to present comments. The requirements of Article 113(1) EPC cannot be considered to be met if the factual basis is not sufficiently given in the preceding communication(s) so that the applicant has to speculate about the examining division's assessment and thus is not put in the position to properly defend its rights (see T 435/07, points 2.1, 2.6 of the Reasons). Consequently, only if a preceding communication pursuant to Article 94(3) EPC sets out the essential legal and factual reasoning to support a finding that a requirement of the EPC has not been met, can a decision based on such a finding be issued without contravening Article 113(1) EPC (see T 305/14, point 2.3 of the Reasons).

2.2 The board does not agree with the appellant's assertion that the examining division's remarks in its second communication did not represent an objection to non-allowable amendments in the sense of Article 123(2) EPC. When reading the second communication in connection with the precedent communication where the examining division objected to an infringement of Article 123(2) EPC and linked it directly with the requirements of Rule 137(4) EPC, it becomes sufficiently clear that the examining division, when pointing in its second communication (only) to Rule 137(4) EPC, raised at the same time an objection under Article 123(2) EPC. Indeed, the appellant itself in its reply to the second communication addressed the objections under the headline "Basis for the amendments, Art.123(2) EPC".

2.3 However, the board holds that the examining division's objection in its second communication cannot be considered to set out the essential legal and factual reasoning that the requirements of Article 123(2) EPC have not been met.

2.3.1 The examining division contented itself with pointing out the concrete amendments that constituted added subject-matter and citing the pertinent provisions of the European Patent Convention and its Implementing Regulations that were thereby infringed. The appellant thus was not clearly informed in the communication why the examining division was of the opinion that the objected amendments contained subject-matter which extended beyond the content of the application as filed. The statement was put forward in an abstract way only, without the necessary logical chain linking the given statement and the particular technical facts of the case.

2.3.2 Rather, it was only with the impugned decision that the appellant learnt about the technical considerations behind the objections made in the second communication. The examining division stated there for the first time that it considered the objected amended feature "split adjustable locking mechanism" to be an impermissible intermediate generalisation. The same applies to the deleted technical feature "having a threaded adjuster interposed between the support and the piston, such that rotation of the threaded adjuster increases or decreases the force the piston exerts on the bed", as the examining division explained for the first time in its decision that it could not be seen that the threaded collet and locking sleeve would represent a threaded adjuster having the function of increasing or decreasing the force the piston exerts on the bed.

2.4 As a result, because the appellant learnt about the essential reasoning for the first time in the impugned decision, it did not have an opportunity to present its comments with respect to that reasoning, contrary to the requirements of Article 113(1) EPC. This constitutes a substantial procedural violation.

3. No rectification by the examining division

3.1 Without having impact on the outcome of the case at hand, the board notes that, apart from the procedural violation considered above and as far as the substantive issues are concerned, the examining division was not incorrect in not rectifying its decision.

3.2 Only in the event that the appeal is objectively to be considered as admissible and well-founded, is the first instance department obliged to grant interlocutory revision according to Article 109(1) EPC. An appeal by an applicant for a European patent is to be considered, as far as the substantive issues are concerned, well-founded within the meaning of Article 109(1) EPC if the main request of the appeal includes amendments which clearly meet the objections on which the refusal of the application has been based as indicated by the examining division (see T 139/87, OJ EPO 1990, 68, point 4 of the Reasons; T 1060/13, point 4.1 of the Reasons).

3.3 However, amended claim 1 as filed with the statement setting out the grounds of appeal reads "... and having a threaded adjuster interposed between the column and the piston, ...", whereas claim 1 as originally filed reads "... and having a threaded adjuster interposed between the support and the piston, ..." (emphasis added). Under these circumstances the appellant's amendment does not fully meet the examining division's objection.

4. Remittal

4.1 The appellant did not file an express request to remit the case to the department of first instance for further prosecution. However, the appellant explicitly requested "to continue examination of the present patent application on the basis of the claims as filed" (see statement of ground of appeals, page 2, first paragraph) and that the examining division grant interlocutory revision. Thus, it becomes sufficiently clear that also in the case of non-rectification by the examining division it is the appellant's main request that the examining division continue substantive examination of the patent application. As a consequence, the board considers the appellant's implicit main request in the just mentioned case that the decision under appeal be set aside and the case be remitted to the department of first instance for further prosecution.

4.2 Since a substantial procedural violation took place, based on the appellant's main request the case is remitted to the first instance for further prosecution without an analysis of the appealed decision in its substantive aspects, nor a decision on the claim requests of the appellant on file (Article 11 RPBA).

5. Reimbursement of the appeal fee

In view of the foregoing, the appeal is successful to the extent that the decision under appeal is set aside. Moreover, as a consequence of the substantial procedural violation the applicant was only able to have its right to be heard restored by filing the appeal. In view of this the board considers the reimbursement of the appeal fee as equitable (Rule 103(1)(a) EPC).

6. Request for oral proceedings

Since the board allows the appellant's higher-ranking requests, there is no need to appoint oral proceedings, which were only requested on an auxiliary basis in the present case.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The appeal fee is to be reimbursed.

T 1107/12 - Standard of review and evidence

Key points

• The OD had considered the publication date of D3 (a brochure-like document) to be proven by a witness. Because the OD had considered the witness to be credible, it was not relevant whether the OD's decision was based on the standard of proof of "up to the hilt" or "balance of probabilities" .
• As tot the assessment of the evidence in appeal, the Board notes that the OD's evaluation of the evidence was made without legal mistakes and with due consideration of the applicable criteria, and was comprehensible and did not show any errors of reasoning. Therefore, it is not to the Board to place its own evaluation of the evidence in place of that of the Opposition Division. 
• As a comment, the decision seems to imply that this Board applied a standard of review with some level of deference for the questions of fact rather than a de novo review.

T 1107/12 - link

Entscheidungsgründe

1. Öffentliche Zugänglichmachung von Dokumenten

1.1 Die Dokumente D3 und D31 wurden unter anderen von der Einspruchsabteilung als zum Stand der Technik gehörig akzeptiert.

Die öffentliche Zugänglichmachung von D31 vor dem Prioritätstag des Streitpatents wurde seitens der Beschwerdegegnerin nicht mehr bestritten.

1.2 D3 (SLOTOLOY ZN 80 Verfahren)

1.2.1 Die Beschwerdegegnerin bestreitet die öffentliche Zugänglichmachung des Dokuments D3 vor dem Prioritätstag des Streitpatents. Sie argumentiert im Wesentlichen, dass die Aussage des Zeugen Dr. Jordan nicht mit dem von der Rechtsprechung (T 750/94, ABl. EPA 1998, 32, Leitsatz I) geforderten hohen Grad an Sicherheit ergeben habe, dass D3 vor dem Prioritätstag des Streitpatents tatsächlich an potentielle Kunden der Beschwerdeführerin I verteilt wurde.

Die Beschwerdeführerin I widerspricht dem.

1.2.2 Die Kammer kann nicht erkennen, dass die Einspruchsabteilung bei der Beweiswürdigung rechtsfehlerhaft vorgegangen wäre. Insbesondere ist nicht ersichtlich, dass die Abteilung von einem falschen Beweismaßstab ausgegangen wäre. Zwar hat die Einspruchsabteilung sich nicht ausdrücklich mit der Frage beschäftigt, ob im vorliegenden Fall der strenge Beweismaßstab "über jeden vernünftigen Zweifel hinaus" oder der übliche Beweismaßstab der "Abwägung der Wahrscheinlichkeit" angebracht gewesen wäre. Die zitierte Rechtsprechung, die absolute Gewissheit bzw. zweifelsfreien Nachweis verlangt, betrifft Fälle von offenkundiger Vorbenutzung (siehe T 441/04, T 472/92 und T 2451/13), und zwar wegen des Umstands, dass in so gelagerten Fällen das Beweismaterial in aller Regel in der Verfügungsmacht der Einsprechenden liegt. Im vorliegenden Fall geht es um die Frage, ob ein bestimmtes Dokument, das von der Einsprechenden 1 selbst stammt, zu einem bestimmten Zeitpunkt der Öffentlichkeit zur Verfügung stand. Hierzu liegt Zeugenbeweis vor, der frei zu würdigen ist. Im Ergebnis kann offen bleiben, ob auch in dieser Konstellation der strengere Beweismaßstab anzulegen ist. Denn die Würdigung der Zeugenvernehmung des Dr. Jordan durch die Einspruchsabteilung hat keinerlei Zweifel an der Glaubhaftigkeit seiner Aussage oder an der Glaubwürdigkeit seiner Person ergeben. Die Einspruchsabteilung hat daher auch keine Abwägung der Wahrscheinlichkeiten vorgenommen, sondern in allen relevanten Punkten festgestellt, dass keine Anhaltspunkte bestanden, an der Richtigkeit seiner Zeugenaussage zu zweifeln. Somit ist die Einspruchsabteilung im Ergebnis "über jeden vernünftigen Zweifel hinaus" von der Richtigkeit der Aussage überzeugt gewesen. Die Beweiswürdigung erfolgte auch im übrigen ohne Rechtsfehler und unter Heranziehung der maßgeblichen Kriterien, war in allen Punkte nachvollziehbar und wies auch keine Denkfehler auf, so dass es nicht an der Kammer ist, ihre eigene Beweiswürdigung an Stelle derjenigen der Einspruchsabteilung (siehe nachstehende Punkte 1.3.3. und 1.3.4 [not in decision under that number]) zu setzen.

1.2.3 Es ist unstreitig, dass betreffend D3 keine Geheimhaltungsverpflichtung bestand. Das Dokument D3 wurde mit Datum vom 5. April 2004 vom Ersteller freigegeben, danach in Druck gegeben und den Tochterunternehmen und Gebietsrepräsentanten zur Verteilung an bestehende oder potentielle Kunden zur Verfügung gestellt. Zwischen der Freigabe am 5. April 2004 und dem Prioritätstag des Streitpatents (20. Dezember 2004) verbleibt so ein Zeitraum von maximal ca. achteinhalb Monaten. Es ist unstreitig, dass kein konkretes Datum einer Verteilung der Arbeitsmappen D3 an die Öffentlichkeit nachgewiesen werden konnte.

1.2.4 Nach Aussage des Zeugen Dr. Jordan erfolgte die Übergabe an Endkunden in der Regel innerhalb eines Monats nach Freigabe durch die Vertreter der Tochterunternehmen und die Gebietsrepräsentanten. Es erscheint der Kammer, so wie der Einspruchsabteilung, glaubhaft, wenn der Zeuge aussagt, dass eine Verzögerung beim Zurverfügungstellen neuer technischer Unterlagen nicht im Interesse dieser Personen oder der Beschwerdeführerin I gelegen haben könne. Daher kann das gegenteilige Argument der Beschwerdegegnerin nicht überzeugen. Dagegen spricht auch, dass laut unwidersprochener Zeugenaussage mindestens drei Zn-Ni-Beschichter bereits im Jahre 2004 auf das SLOTOLOY ZN 80 Verfahren umgestellt hatten (Fa. Hillebrandt: März 2004, Fa. Musched & Gierse: Juli 2004, Fa. Collini: Anfang 2004). Der Zeuge Dr. Jordan sagte weiter glaubhaft aus, dass der Zweck der Dokumentation D3 genau darin gelegen habe, den Kunden die Führung des Galvanikbades überhaupt erst zu ermöglichen. Vor diesem Hintergrund ist die Einschätzung der Einspruchs­abteilung in keiner Hinsicht zu beanstanden, dass D3 vor dem Prioritätstag des Streitpatents einer oder mehrerer dieser Firmen ohne Geheimhaltungs­verpflichtung zugänglich gemacht wurde.

1.2.5 D3 gehört somit im vorliegenden Fall zum Stand der Technik.

T 1320/13 - Values do not disclose range

Key points

• The decision mostly deals with insufficient disclosure of plants obtained by crossing and selection (the decision being given on 17.01.2017), but I leave that aside.
• The Board decides that the claimed range of "between 0.6 and 1" for a particular ratio is not given basis by the remark in the application as filed, that  the range can be "0.1 and about 1", and that the ratio is for example "about 1.0, 0.9, 0.8, 0.7, 0.6, 0.5, 0.4, 0.3, 0.2, 0.1 or even 0, derivable therein". 

EPO T 1320/13 - link

11. Claim 1 inter alia defines the alpha-subunit level and the alpha'-subunit level in the beta-conglycinin trimer (hereinafter "alpha:alpha' ratio") in the range of "between 0.6 and 1".

12. The appellant argued that, although this range was not explicitly disclosed in the application, it had a basis in the disclosure of the range "0.1 and about 1" in claim 5 in conjunction with the value "0.6" disclosed in a list on page 5, lines 12 and 13, which reads: "about 1.0, 0.9, 0.8, 0.7, 0.6, 0.5, 0.4, 0.3, 0.2, 0.1 or even 0, derivable therein". The list of values disclosed on page 5 was understood by the skilled person to represent individual end-points of sub-ranges in view of the ranges disclosed in claims 5, 6 and 10, which could therefore be combined to define an amended range in line with the criteria set out in decision T 2/81.

T 1756/14 - Automating a method

Key points:

• The invention relates to a problem of installing in an automated way the same software on a new computer as on an old computer. 
• The board considers that the technical problem solved by the invention is to provide automated support for the installation on a second device of the software that happens to be installed on a first device.
• In this way, the Board disagrees with the Examining Division. " The examining division thus considered that the method being implemented was both known and non-technical. The board notes that if an invention solves the problem of automating a known method, whether it involves an inventive step does not depend on whether that method is also non-technical, in part or as a whole." 

EPO T 1756/14 -  link

Inventive step, main request

5. The examining division found that claim 1 of the main request "define[d] the implementation of a known non-technical method on top of known hardware" (see page 7, section "Conclusion").

5.1 The examining division thus considered that the method being implemented was both known and non-technical. The board notes that if an invention solves the problem of automating a known method, whether it involves an inventive step does not depend on whether that method is also non-technical, in part or as a whole.

T 0297/13 - Costs order for having document admitted

Key points

• In this opposition appeal case, the Board sets aside the OD's decision.
• The Board decides to admit D10, a late filed document filed by the opponent, because D10 is prima facie highly relevant. " In fact, D10 could arguably have been filed in the opposition proceedings or, at the very least, with the appeal grounds." 
• This leads to an apportionment of costs, against the opponent. " The late filing of D10 has in effect resulted in an entirely new case being presented at a late stage of the appeal proceedings, with the consequence that a further procedure before the opposition division, and possibly the Board, is required. [] For reasons of equity, an apportionment of the future costs caused by the late filing of D10 should be accorded in favour of the [patentee]." However, the case is remitted and these costs are therefore not yet clear.
• " Thus, it is incumbent upon the opposition division in its further prosecution of the case following remittal, to consider and decide upon the issue of apportionment of costs" 

EPO T 0297/13 -  link

2. Admission of D10 in the proceedings

2.1 The appellant filed D10 in response to the respondent's reply to the grounds of appeal.

2.2 The filing of D10 is very belated, and the factual situation of the case had not changed during the appeal proceedings. In fact, D10 could arguably have been filed in the opposition proceedings or, at the very least, with the appeal grounds.

2.3 However, the content of D10 is prima facie highly relevant for the questions of novelty and potentially inventive step.

3.2 In the oral proceedings, after the Board's decision to admit D10, both parties requested remittal of the case to the opposition division.

3.3 The Board sees no reason to revise its opinion. It thus exercises its discretionary power under Article 111(1) EPC to remit the case to the opposition division for further prosecution on the basis of D10.

4. Since the case is remitted, the Board refrains from taking a final decision on whether or not D10 anticipates the subject-matter of claim 1, as argued by the appellant.

5. However, before remitting the case and for the sake of procedural efficiency, the Board will decide upon a number of issues which are disputed by the parties, namely the interpretation of claim 1, the novelty of the claimed subject-matter with respect to D1, D5 and D8, and the alleged substantial procedural violation.

T 0609/12 - More relevant is not relevant

Key points: 

• The OD had not admitted a late filed document, because it was not "it appeared not to be prima facie more relevant to inventive step than documents (1) and (2), which were already on file and were considered "pertinent starting points" for inventive step". 
• The Board overrules the OD. " Contrary to the opposition division's opinion, a newly filed document does not have to be more relevant than the closest prior art in order to become relevant to a ground for opposition under consideration." 

EPO T 0609/12 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Admission of documents (11) and (26) to (31) into the appeal proceedings - Article 114(2) EPC and Article 12(4) RPBA

2.1 The opposition division did not admit document (11) into the proceedings because, in its opinion, it appeared not to be prima facie more relevant to inventive step than documents (1) and (2), which were already on file and were considered "pertinent starting points" (see point 2.2.3 of the decision).

Contrary to the opposition division's opinion, a newly filed document does not have to be more relevant than the closest prior art in order to become relevant to a ground for opposition under consideration. In the present case, document (11) was filed by the opponent to support its inventive step argument that, at the filing date, fluticasone propionate was the corticosteroid of choice for replacing triamcinolone acetonide in example III of document (1), which was considered to be the closest prior art (see letter of 8 August 2011, point 8.1.4). As document (11) discloses what could be seen as superior properties of fluticasone propionate compared to triamcinolone acetonide, it is prima facie highly relevant to the issue of obviousness. In addition, the document was filed in response to the opposition division's preliminary opinion, and the respondent had more than two months to react before oral proceedings. Hence, the board has concluded that the opposition division did not properly exercise its discretion with regard to document (11) and has decided to overturn its decision not to admit the document into the proceedings.

T 1440/12 - Filed but not pending requests

Key points:

• Patent proprietor filed with its reply to the Statement of grounds six new requests, and described them as "six auxiliary requests that the proprietor may subsequently choose to rely upon". Hence, the Board considers the requests to be not actually pending, such that the patent is revoked after the main request is found to lack clarity. The patentee did not attend the oral proceedings.

EPO Headnote
In the case of opposition, the intention behind Article 113(2) EPC 1973 is that the EPO may not maintain a patent according to a particular text unless the proprietor has consented unambiguously to the patent being maintained in that form. The "text submitted" is to be understood to mean a text submitted by the proprietor with the clear intention that the patent be maintained according to that text, at least as an auxiliary measure (Reasons, point 10.2).

EPO T 1440/12 -  link

10. The status of the "auxiliary requests"

10.1 Article 113(2) EPC 1973 states the following:

"The European Patent Office shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent."

10.2 In the case of opposition, the intention behind Article 113(2) EPC 1973 is that the EPO may not maintain a patent according to a particular text unless the proprietor has consented unambiguously to the patent being maintained in that form. The "text submitted" is to be understood to mean a text submitted by the proprietor with the clear intention that the patent be maintained according to that text, at least as an auxiliary measure.

EPO Guidelines 2017 with track change

I have prepared an overview of the modified sections of the Guidelines 2017 with track change.

The Guidelines 2017 with track change document (modified sections only) is available in Google Drive - link

(Document is in viewing only mode without any discussion functions or the like, see image below. The link is a Bitly link, in order to have a counter for the clicks.)

A PDF file of the complete Guidelines 2017 with track change is available at the EPO site (link). 

Key changes:

• In "exceptional" cases, the first communication from the examining division can be summons for oral proceedings. The first communication can also be the minutes of a telephone interview. 
• More examples of when the examining division should not admit amended claims into the proceedings. 
• Added paragraphs about claims for a product defined by the result to be achieved. The Guidelines conclude that the claim must state the essential features necessary to achieve the result claimed.
• Extensive new discussion of patentability of user interfaces and (manners of) presentations of information. Includes a paragraph about " Effects relying on human physiology".
• About the closest prior art: " If an argument shows that the claimed invention was obvious over some prior art, this argument cannot be refuted merely by the introduction of another piece of prior art. Prior art on the basis of which the claimed invention is considered non-obvious cannot be "closer" than a document on the basis of which the claimed invention appears obvious. In such a situation, the former does not represent the most promising springboard from which to arrive at the invention "

• No same date priority. Priority can only be claimed for applications filed at least one day earlier.
• In case of re-establishment of rights for (not) carrying out EP entry after PCT with further processing, the Guidelines now state that a re-establishment fee is required for each omitted act separately, e.g. five RE fees (for the filing fee, search fee, designation fee, examination request, and filing translation). 
• Quite a number of editorial changes to add references to oral proceedings before the Legal Division.
• A discussion of how complaints are handled. 
• If you would like to use Rule 56 EPC (missing parts) for a PCT application, you need to do early processing within the two months time limit. 
• Finally a good explanation of what Rule 137(5), first sentence (non-searched subject-matter) means:  " in order to assess whether or not amended claims fulfil the requirements of Rule 137(5), first sentence, the examining division needs to establish first whether or not the subject-matter to which they relate has or should have been searched (see B-III, 3.5) and second whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search."

The document is based on the list of modified sections (major amendments only) at: https://www.epo.org/law-practice/legal-texts/html/guidelines2017/e/m.htm

J 0019/16 - PCT dead after EP entry

Key points

• The applicant filed a PCT application with the USPTO, which was not competent as rO because the applicant was a German company. However, the USPTO forwarded the PCT application to the IB only 3 years after the PCT filing date. By that time, the acts for entry into the European phase had already been carried out. The IB then notified (in January 2009) the applicant that the fees for the international phase had not been paid. The applicant did not pay the fees to the IB, and the PCT application was considered withdrawn for failure to pay the fees.
• In 2014, the EPO Receiving Section informed the applicant that the application could not be processed by the EPO as designated office, as it was considered withdrawn in the international phase. This is the appeal against that decision.
• The Legal Board finds that the rO is still competent for failure to pay any fees in the international phase, even after entry into the national phase. The Board also notes that the applicant did not request review under Article 25(2) PCT. The Board also finds that the (implicit) request for excuse under Article 24(2) PCT, i.e. re-establishment of rights, was not substantiated as to the requirement of due care. 
• Finally, the Board rejects the argument based on the protection of legitimate expectations, because the applicant had received the IB's communications about failure to pay the fees for the international phase.
• Note 27.02.2019: EPO headnote added. This headnote overrules the remarks in " V 2/84" (OJ 1984 p.565; published decision of Examining Division) as far as V2/84 had assumed that Rule 51 PCT sets the time limit. 

EPO Headnote
The time limit, if any, for making a request to be excused under Article 24(2) PCT is subject to national law only. The two-month time limit pursuant to Article 25 PCT is therefore not applicable under Article 24(2) PCT.

EPO J 0019/16 -  link

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. The duly summoned appellant did not attend the oral proceedings. In accordance with Rule 115(2) EPC, however, the proceedings continued without it. In accordance with Article 15(3) RPBA, the board relied for its decision only on the appellant's written submissions. The board was in a position to decide at the conclusion of the oral proceedings since the case was ready for decision (Article 15(5) and (6) RPBA), and the voluntary absence of the appellant was not a reason for delaying the decision (Article 15(3) RPBA). The principle of the right to be heard pursuant to Article 113(1) EPC was observed since, by absenting itself from the oral proceedings, a party gives up this opportunity to be heard (see the explanatory notes to Article 15(3) RPBA cited in T 1704/06, not published in OJ EPO).

3. In its annex to the summons the board gave the following opinion on the merits of the case:

"2. According to Article 24(1)(ii) PCT, if for instance an inter­national application is considered withdrawn by virtue of Article 14(3)(a) PCT, the effect of the international appli­cation provided for in Article 11(3) PCT in principle ceases in any designated state, with the same consequences as the withdrawal of any national application in that state. Exceptions to this rule are provided in Rule 90bis.6(a) PCT, in Article 25(2) PCT and in Article 24(2) PCT.

3. The Board of Appeal has examined the file and considered the written arguments submitted by the Appellant, in particular in the statement of 16 December 2016 setting out the grounds of appeal. The Board's provisional view is that the loss of rights concerning the application at issue which occurred in the inter­national phase can no longer be remedied in the national phase and that the Receiving Section therefore - at least as regards the outcome - acted correctly when it refused the Appellant's request to further prosecute the application. In reaching that provisional view, which - if maintained - will lead to the dismissal of the appeal, the Board has taken into account the considerations set out in the following paragraphs.